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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Virgin Enterprises Ltd v Virginic LLC [2019] EWHC 672 (Ch) (22 March 2019) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2019/672.html Cite as: [2019] EWHC 672 (Ch) |
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BUSINESS AND PROPERTY COURTS
CHANCERY APPEALS (CHANCERY DIVISION)
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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VIRGIN ENTERPRISES LIMITED |
Appellant |
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- and - |
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VIRGINIC LLC |
Respondent |
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Aaron Wood (instructed by Novagraaf UK) for the Respondent
Hearing date: 18 March 2019
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Crown Copyright ©
MR JUSTICE ARNOLD :
Introduction
The Hearing Officer's decision
i) the goods specified in the Application were wholly contained within those covered by the Earlier Marks, and therefore identical to them;ii) the average consumer was a member of the general public;
iii) the level of attention paid by the average consumer would be average;
iv) the trade marks were visually similar to a high degree;
v) the trade marks were aurally similar to a high degree;
vi) the trade marks were conceptually similar to a medium degree;
vii) the Earlier Marks had a normal degree of distinctive character;
viii) there was no likelihood of direct confusion between the trade marks; and
ix) there was no likelihood of indirect confusion between the trade marks.
Grounds of appeal
Standard of review
Inherent distinctiveness of the Earlier Marks
"In this instance, the common element 'VIRGIN' has no link or association with the goods at issue and can be said to be an arbitrary choice when considering the nature of the goods. Consequently, the mark is found to have a normal degree of inherent distinctive character"
Conceptual similarity
"The earlier marks comprise the word 'VIRGIN', which conveys the concept of 'someone who has never had sex; something that has never been used or spoiled'. The applied for mark 'VIRGINIC' has no clear or obvious meaning as a whole, however, it is likely that the element 'VIRGIN' which constitutes the beginning of that mark, will be perceived by the average consumer, as it is a fairly common English word. As such, the marks can be said to be conceptually similar to a medium degree as the later mark will be perceived to be evocative of 'VIRGIN'."
Independent distinctive role?
Likelihood of indirect confusion
"44. Mr Iain Purvis QC, sitting as the Appointed Person, in L.A. Sugar Limited v By Back Beat Inc, Case BL-O/375/10 noted that:
'16. …Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: "The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark.
17. Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories:
(a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right ("26 RED TESCO" would no doubt be such a case).
(b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as "LITE", "EXPRESS", "WORLDWIDE", "MINI" etc.).
(c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension ("FAT FACE" to "BRAT FACE" for example).'
45. In Duebros Limited v Heirler Cenovis GmbH, BL O/547/17, Mr James Mellor Q.C., as the Appointed Person, stressed that a finding of indirect confusion should not be made merely because the two marks share a common element. In this connection, he pointed out that it is not sufficient that a mark merely calls to mind another mark. This is mere association not indirect confusion
46. I believe that the average consumer of the goods at issue will not, when faced with the mark 'VIRGINIC', assume that it is a logical brand extension or an evolution of 'VIRGIN' products. Whilst the earlier marks have been found to be inherently distinctive to a normal degree, it cannot be said to be the case that the word 'VIRGIN' is strikingly distinctive when applied to the goods at hand.
47. Therefore, although it is likely that the average consumer may recognise the element 'VIRGIN' within the applied for mark 'VIRGINIC', this will merely serve to bring the earlier marks to mind but will not, in my opinion, result in indirect confusion."
Re-assessment of the likelihood of confusion
Conclusion